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9 September 2016Copyright

CJEU Playboy decision leaves ‘considerable uncertainty’, say lawyers

Following the Court of Justice of the European Union’s (CJEU) decision on hyperlinking and copyright yesterday, intellectual property lawyers have told WIPR that the ruling leaves “considerable uncertainty for legitimate businesses”.

The CJEU ruled that posting a hyperlink to unauthorised copyright works is not a ‘communication to the public’ as long as the person who posts the link doesn’t seek financial gain and doesn’t know that the works have been published illegally.

The court was ruling on GS Media v Sanoma Media, referred by the Supreme Court of the Netherlands.

Sanoma, the publisher of Playboy magazine, had sued GS Media for publishing hyperlinks on its website GeenStijll that directed viewers to an Australian website where photos of Dutch celebrity Britt Dekker were available. The photos were published without the consent of Sanoma, which owns the copyright to the photos at issue.

The ruling, which is now available on the Curia website, has evoked strong reactions from lawyers.

Joel Smith, partner at Herbert Smith Freehills, said: “The concept of communication to the public in the copyright directive (EU Directive 2001/29/EC) requires some sort of commercial exploitation or gain to fulfil the criteria and be capable of challenge. The decision helpfully protects ordinary, non-commercial users of the internet who hyperlink to something freely available from having to enquire whether the material was legitimately posted.”

Smith said that any entity seeking to make a profit from hyperlinking is likely to have made a communication to the public.

He added that it could be unclear whether a benefit is being obtained and the person creating the link was “clearly aware” of the lack of consent from the rights owner.

This outcome leaves considerable uncertainty for legitimate businesses, he said.

“Sophisticated businesses with an online presence are now going to have to check whether the third-party content is freely available or if hyperlinking is restricted by the third party’s web terms and conditions,” he added.

Rebecca Swindells, partner at Jones Day, told WIPR that a careful balance has been struck between article 17(2) (right to intellectual property) and article 11 (covering intermediaries) rights.

While she said that “this has largely been achieved”, she noted that the decision marks quite a drastic departure from existing copyright law, primarily to the detriment of copyright owners, “as the introduction of the knowledge element to primary infringement will make it more difficult to prove infringement”.

Swindells said that the task faced by the CJEU in deciding this case was never going to be an easy one.

“If they had found that all linking to illegal content was itself a communication to the public and therefore copyright infringement, they would have essentially given copyright owners a carte blanche to pursue millions of internet users across the globe who share links to copyright content which has been published without the copyright owner’s consent.”

She added that this may have included teenagers sharing content innocently on social media without realising that the publication that they are linking to has not been authorised by the copyright owner.

On the consequences of the decision, Swindells notes that where a party posts a link for financial gain, there is a presumption that it will first have carried out necessary checks to ensure that the work is not illegally published on the website to which the hyperlink leads. She considers that “in practical terms, this should assist copyright owners in having to prove the knowledge element that is, as a result of this case, essential to succeeding in an action against those who link to unauthorised copyright content”.

“That said, it is not yet clear what ‘necessary checks’ such persons will be expected to undertake to protect themselves from liability and it is likely that this will be determined by further case law.”

She added: “It remains to be seen how this system will operate in practice and, again, this may be the subject of further case law.”

Jaap Bremer, partner, and David Mulder, lawyer at Netherlands-based law firm BarentsKrans, said: "I expect the decision will be welcomed by copyright owners who will now be able to take action against unauthorised commercial use of hyperlinks to their copyright-protected content.

"The relevant take-away message for many people will be that private individuals are free to post hyperlinks on, for instance, their Facebook page as long they do not know (and have not been made aware) that the hyperlink leads to copyright-infringing content."

He added: "The CJEU has tried to create a fair balance between copyright protection and the fundamental rights of innocent private users. The interesting question will be: how will the decision of the court be applied in practice? For instance, do hyperlinks to torrents, where the (often) protected content is accessed from another individual’s computer instead of a website on the internet, also fall within the scope of this decision?"

Dag Wetterberg, partner at law firm Magnusson, told WIPR: “This is not a decision, it is only a preliminary ruling so it should not be considered as a verdict. It raises a lot of questions such as foreseeability for rights holders and users of hyperlinks since it raises practical and time-consuming issues to figure out if a link is made to lawful material with or without consent from the rights holders.

"It is always complicated for the right holders to be able to proove that the user has made a profit when linking to a site with 'unlawful' material. I will follow the ruling in the Supreme Court of Netherlands carefully and closely, and am pretty sure they will take a more practical standpoint in their final verdict," he added.

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More on this story

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8 September 2016   Europe’s highest court has ruled that posting a hyperlink to unauthorised copyright works is not a communication to the public, but has set two conditions.
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25 January 2018   Technology and culture website Boing Boing has asked a US court to dismiss a copyright lawsuit filed by Playboy Entertainment Group.
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15 February 2018   A US court has dismissed a lawsuit brought by Playboy Entertainment Group with leave to amend, as the facts produced failed to support the company’s copyright infringement allegation.